In Brooks v. Creative Arts by Calloway LLC, Opposition No. 91169266 (October 30, 2009), Christopher Brooks, the grandson of the band leader Cab Calloway, opposed the registration of the mark CAB CALLOWAY (the “Mark”) by Creative Arts by Calloway LLC. Brooks had first used his mark THE CAB CALLOWAY ORCHESTRA in connection with musical performances and on CDs and videotapes prior to the registration of the Mark by Creative Arts.
The issue presented before the TTAB was whether Brooks could establish rights in THE CAB CALLOWAY ORCHESTRA prior to the filing date of the Creative Arts application for the Mark.
Under common law, to warrant trademark protection supporting registration, personal names must have secondary meaning. Creative Arts attempted to persuade the TTAB that personal names are descriptive and not entitled to protection absent secondary meaning. However, the TTAB advised that while surnames continue to require a showing of secondary meaning under the Lanham Act, personal or full names do not.
Therefore, it was held that when a plaintiff asserts prior rights based on a personal name, not a surname, the personal name is inherently distinctive. Brooks’s opposition was upheld and it was established that he was the prior user of not only his service mark but also the trade name THE CAB CALLOWAY ORCHESTRA, since Brooks had developed a trade identity in the name.
The TTAB rejected the argument presented by Creative Arts that Brooks had failed to establish secondary meaning and that to rule otherwise would be in direct conflict with the basic underpinning of trademark law, which is that rights are obtained through use, and not by being the first to file an application.